1989SCMR361 (PLP)

NASIM HASAN SHAH, J.‑‑This appeal, by the leave of this Court, is directed against the judgment and order of the High Court of Sind at Karachi dated 15‑1‑1986 passed in High Court Appeal No. 82 of 1984. ) The relevant facts are that ,he appellant is an American Company which manufactures and sells laminated plastics under the registered Trade mark `Formica'. According to the appellant, the word `Formica' has been registered as a Trade mark in over one hundred countries including Pakistan (where it was registered in the year 1950). It ha, extensive sales of formica brand products which is evident from the fact that these were of the order of U.S. Dollars four hundred millions in the relevant years. Thus, the goodwill reputation and standing attached to the Trade name `Formica' is immense. The grievance of the appellant is that the respondent is trying to take illegal and unfair advantage of his trade name and that his above dishonest conduct has led to the present litigation. In elaboration of the aforesaid plea the appellant has explained that the respondent incorporated itself into a Company under the Trade name `Pakistan Formica Limited' sometimes in 1981 but went into production in or about February, 1983. As it adopted `Formica' as a part of its trading style which was likely to convey a false impression that the respondent's products were manufactured by the plaintiffs or with their technical assistance, the appellant served a legal notice on the respondent on 21st August, 1983 calling from it to desist therefrom. Since the respondent failed to comply with the notice a suit was filed in the High Court of Sind on 26‑1‑1984 and an injunction application bearing No. C.M.A. 808 of 1984 was filed alongwith the suit. However, this application was dismissed by a learned Single Judge on 5‑8‑1984 whereupon High Court Appeal No. 82 of 1984 was filed but this too was dismissed by the impugned judgment dated 15‑1‑1986. Hence the present appeal. The learned Single Judge while dismissing the application for injunction observed that "the defendants have asserted that the plaintiffs' products are not sold here in Pakistan and, therefore, the people are not aware of the plaintiffs' Trade mark `Formica'. This particular averment of defendant is not denied by the plaintiffs". He was also of the view that there could be no deception or confusion in the mind of the purchasers with regard to the products of the appellants as distinguished from the respondent's products since the mark used by the respondent (namely Decorite) did not mention the trading name of the defendant (namely Pakistan Formica Limited). The learned Single Judge was further of the view that there was no legal impediment to the incorporation of the respondent under the name and style m which he had got himself incorporated and also held that no evidence was placed before the Court to establish that the confusion and deception had actually taken place, although this was necessary and lastly that prima facie the word `Formica' appeared to have lost its distinctiveness. On appeal, the learned Division Bench differed with the finding of the learned Single Judge that the plaintiffs products are not sold in Pakistan. 1t also did not agree with some of the other findings recorded by the learned Single Judge but agreed with the resultant order passed by him refusing to grant an injunction. In this connection it was observed that even though the plaintiff had made sales of their products in Pakistan his sales were not likely to be affected by any competition on the part of the respondent, which was comparatively speaking a small company because the plaintiff was in such a strong and dominant position. Moreover, the circumstance that the plaintiff had been affecting sales of its products in Pakistan showed that no confusion or deception had been caused in the minds of the public. The learned Division Bench also observed that the question of confusion or deception was liable to be decided on the basis of the evidence to be led at the trial. Accordingly, if an injunction was granted the respondent would be adversely hit. A prima facie case in favour of the plaintiff was not sufficient, according to the learned Division Bench, as question of the balance of convenience was also to be considered. In the circumstances of the case, the balance of convenience lay in the injunction not being granted rather than in its being granted, it concluded. Leave to appeal was granted to examine the contention whether in the facts and circumstances of the case, a prima facie case was made out for the grant of injunction as the use of the word `Formica' would tantamount to the infringement of the Trade mark of the appellant. Mr. Khalid Anwar has submitted that the learned Division Bench of the High Court was not right in holding that a prima facie case is not enough as a general rule for issuance of a temporary injunction unless the factor of balance of convenience is also in favour of the plaintiff. He has referred us to Vicks Chemical Company v. Hopes Cosmetic and Chemical Works 1957 (2) PLR 761, wherein it was observed:‑‑ "Where, however, the plaintiff has such a strong prima facie case, it appears to me that the balance of convenience recedes into the background. It is hardly open to the defendant to say that they ought to be allowed to continue to take advantage of their own fraud." Thus, the crucial question is whether the use of the word `Formica' in the trading style of the respondent has infringed the trade mark of the appellant. From a review of the case‑law cited before us certain principles appear to be settled, namely, (i) the plaintiff selling a class of goods must establish that his business consists of the said class of goods to which his trade name applies; (ii) the aforesaid class of goods is associated in the mind of the public or a section of the public with his trade name and a certain amount of goodwill is attached to the name; and (iii) that the goodwill owned by the plaintiff in Pakistan is of substantial value and that by reason of the defendant selling goods which are falsely described by him in terms similar to the trade name to which the goods attached to the plaintiff, he has suffered or is likely to suffer substantial damage in his business or goodwill. However, there would be no possibility of deception if the use of the trade mark by other persons has ceased to deceive the public as to the maker of the article. In other words, no question of infringement would arise if the said trade name has become common to the trade i.e. has become publici juris. The proper test to decide whether a trade mark which was owned by another has become publici juris is to see whether its use by other persons is still calculated to deceive the public. If the mark has come to be so public and in such universal use that nobody can be deceived by the use of it or can be induced from the use of it to believe that he is buying the goods of the original trader, the right to the trade mark must be gone (see Ford v. Foster, 7 Chancery Appeals 611). The main question, therefore, is to see whether in the circumstances of this case the use of the name in its trading style by the respondent as "Pakistan Formica Limited" was likely to deceive the customers. In other words, has the word "Formica" become common to the trade and hence publici juris so that its use by other persons has ceased to deceive the public as to the maker of the article. Now the word `Formica' is not associated in the Pakistani mind with the Formica Corporation of U.S.A. Indeed even the fact that a Formica Corporation exists in U.S.A. and is marketing its products in Pakistan is yet to be established by evidence. No evidence has been produced that the Trading style adopted by the respondent is causing confusion or deception or is likely to cause confusion or deception to the consumers of the laminated sheets. The possibility of any deception, the element so vital for success in actions of infringement, hardly exists. Section 21 of the Trade Marks Act, 1940, which is the relevant provision in the present context, is in the following terms:‑‑ "Section 21(1).‑‑Subject to the provisions of Sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice the generality of the foregoing provisions, that right shall be deemed to be infringed by any person. who not being the proprietor of tae trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or merely resembling it as to be likely to deceive or cause confusion, in the course of trade in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either:‑‑ (a) as being used as a Trade Mark; or (b) to import a reference to some person giving the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade:" A perusal of Section 21 of the Trade Marks Act, 1940, shows that it provides a remedy to the owner of a trade mark if it is infringed by any person by use of a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade, in relation to any goods in respect of which it is registered and in such manner as to render the use of the mark likely to be taken either: (a) as being used as a Trade Mark; or (b) to import a reference to some person having the right either as a proprietor or as registered to use the Trade Mark or to goods with which such a person as aforesaid is connected in the course of trade. The person. seeking to enforce his right to a Trade Mark has to prove:‑‑ (i) trading in his own goods with the Trade Mark; (ii) a certain amount of popularity which would persuade some one to take advantage of its good reputation or popularity; (iii) that another person uses a mark; (iv) identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to goods in respect of which it is registered; (v) in such manner as to render the use of that mark likely to be taken to import a reference to the Proprietor of the mark or import a reference to goods with which a Proprietor is connected in the course of a trade. In the present case: the appellants have failed to show that by using the trade name `Pakistan Formica Limited' the respondent has deceived the public into thinking that its products are those of the appellants or are likely to do so. Mr. Khalid Anwar, during the course of the arguments, repeatedly posed the question as to why the respondents had chosen the name `Pakistan Formica Ltd.' for their products if it was not their intention to steal trade name of the appellants and misuse it for their own benefit. To this Mr. Khalid lshaq's reply was that when the respondents started manufacturing Formica, they chose this name for the reason that decorative laminated sheets which they manufactured, were popularly known as `Formica'. However, they still used `Decorate' as their trade name which name appears on all their sheets. The name `Formica' was chosen not to deceive the public but because it had become common to trade as referring to decorative laminated sheets. Be that as it may in our opinion the plaintiffs have not made out such a strong prima facie case, as would persuade us to conclude that the factor of balance of convenience has receded into the background. We think, therefore, that the application for issuance of temporary injunction was rightly refused by the Courts below and their orders do not require any, interference. The result is that this appeal dismissed but the parties are left to bear their own costs. M.Y.H./F‑86/S Appeal dismissed.